In addition to an array of interesting new trademark filings that were lodged during H1 – including continued metaverse filings and some in the realm of artificial intelligence – and the larger industry inclinations that many of them reflect, the first half of the year was also filled with new trademark lawsuits and trademark office proceedings that are worth reflecting on. We take a quick look at a few of those filings, trends, and other developments to give you a snapshot of H1 in trademarks …
Off-White Nabs “For Walking” Registration
In one of the most notable fashion/luxury trademark registrations issued during the first half of the year, the U.S. Patent and Trademark Office green-lit Off-White’s application for “For Walking” for use on footwear, following an almost 3-year-long back-and-forth between the USPTO and the LVMH-owned brand over the registrability of the interesting trademark. In a nut-shell: Since Off-White first filed its application back in October 2020, as first reported by TFL, the trademark office fired off Office action after Office action taking issue with the ability of “FOR WALKING” to indicate a single source of goods when used on footwear.
The Barbie v. BRBY Battle
Barbie-maker Mattel recently lodged a bid with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board in order to block Burberry’s U.S. application for registration for BRBY (which, fun fact, is Burberry’s ticker on the London Stock Exchange) for use on apparel and leather goods. Beyond the similarities shared by the respective companies’ marks in terms of “appearance, sound, and commercial impression,” Mattel maintains that the goods listed in Burberry’s trademark application for registration (namely, those in Classes 18 and 25) “directly overlap with” many of the goods/services that it uses the BARBIE trademark on.
The Rise of Vowel-less Marks
The Barbie v. Burberry clash is not the only one that stems from the enduring trend of new brands adopting names – or in some cases, established companies adopting additional takes on existing brand names – that are devoid of vowels. STIIIZY IP LLC vs. STZY LLC, which pits a cannabis company that offers branded apparel against a sneaker and sock brand over their respective uses of trademarks that are allegedly likely to confuse consumers, also proves timely in this regard.
Quiet Luxury from a Trademark Perspective
Few trends have dominated the zeitgeist so far this year to the extent that “quiet luxury” (and Barbie-core) did. A dive into what the “stealth wealth” trend means from a trademark point of view reveals the power of other, non-word marks – like the source-indicating color (think: Bottega Green or Tiffany Blue) and shape of a product and/or its packaging (the Birkin bag comes to mind here) – for brands in fashion and beyond.
A Clash Over Digital Twin Trademarks
Amid the MetaBirkins battle, Hermès initiated an opposition to block a third-party’s trademark application for HERMES DIGITAL TWIN for use in Classes 9 and 42. The opposition is an interesting one in light of the rising adoption of digital twin technologies by brands ranging from Dior and Louis Vuitton to the likes of ALO Yoga. (For more on some of the most critical issues to consider when it comes to digital twins, you can find that right here.)
The Latest on Green Marks
TFL previously told you about the increasing introduction of “green” and/or “sustainability”-specific trademarks by brands as consumers increasingly exhibit interest in companies’ sustainability credentials and ESG efforts more broadly. (We dove in further here.) Now, we are getting some insight into the registrability of such marks (or lack thereof), with an EU court, for example, affirming the EUIPO’s refusal to register “Sustainability through Quality” on the basis that it is likely to be perceived by consumers as a promotional phrase rather than as an indication of source.
This is a short excerpt from TFL’s H1 2023 Review, which was published exclusively for TFL Pro+ subscribers. (Professional subscribers can find the H1 report in full here.) It delves into everything from the rise in ESG-centric actions to the increasing adoption of AI technologies by the fashion and luxuries goods industries in order to discern current trends and identify critical themes to watch for in the second half of 2023 and beyond.
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